“No man may pass off his goods as those of another.” That single common-law principle is what protects an unregistered trademark in India — through the action of passing off.
What passing off is
Passing off is a common-law tort against unfair competition: representing your goods as someone else’s. The Supreme Court in Cadila Healthcare v. Cadila Pharmaceuticals described it as “unfair trading by which one person, through deception, attempts to obtain an economic benefit of the reputation which the other has established.”
The Trade Marks Act, 1999 does not define passing off, but it recognises it — barring registration where passing off would prohibit use, and (under Section 27(2)) preserving the rights of an unregistered prior user.
Infringement vs passing off
- Infringement is a statutory right, available only to registered proprietors; proving a colourable imitation suffices, and reputation need not be proved.
- Passing off is a common-law right, available to unregistered users too — but the claimant carries a heavier evidentiary burden, the classical trinity.
Lord Diplock’s five characteristics
In Erven Warnink v. Townend (the “Advocaat” case), Lord Diplock identified five marks of passing off:
- a misrepresentation,
- made in the course of trade,
- to prospective customers,
- calculated to injure the claimant’s business or goodwill, and
- causing actual damage to it.
The classical trinity
Distilled from Perry v. Truefitt and Reckitt & Colman v. Borden, and affirmed in India in Laxmikant V. Patel v. Chetanbhat Shah, the claimant must prove:
- Goodwill or reputation in the goods, name or mark;
- a misrepresentation by the defendant (intentional or not) likely to mislead; and
- damage (or the likelihood of it) flowing from the misrepresentation.
Remedies
A successful claimant may obtain an injunction and, at their option, damages or an account of profits, with or without delivery-up of infringing material for destruction. Injunctions usually restrain use of the mark “without clearly distinguishing” the defendant’s goods; in exceptional cases where distinction is impossible, an absolute injunction issues.
Why it matters in India
Passing off prioritises prior use over registration — an earlier user can challenge even a registered proprietor (Section 27(2)), and the action extends to trade names, not just goods. Because India’s registration process is lengthy, passing off is often an unregistered user’s only recourse — though the trinity is demanding, and proving deception and damage is not easy. A related concept, reverse passing off (marketing another’s product as your own), was recognised in John Roberts Powers School v. Tessensohn.
Frequently asked questions
What is passing off? A common-law action preventing one trader from representing their goods or business as another’s, protecting goodwill in an unregistered mark.
What must a passing-off claimant prove? The classical trinity — goodwill/reputation, misrepresentation, and damage (or likely damage).
How is passing off different from infringement? Infringement is a statutory remedy for registered marks (no need to prove reputation); passing off is a common-law remedy available to unregistered users but requires proving the trinity.
Can an unregistered mark be protected in India? Yes — through passing off, and a prior user can even challenge a registered proprietor under Section 27(2).
Legislation referred to
- The Trade Marks Act, 1999